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Oracle v. Google - Patent Marking Facts - A Timetable
Tuesday, January 03 2012 @ 09:00 AM EST

When we last visited the parties on the issue of evidence of patent marking, the parties had reached agreement with respect to process but not timetable. (See, More Arguments with Respect to the Cockburn Damages Report) The parties have now reached agreement on the timetable, and it appears a further concession by Oracle that trial is not imminent.

Per their agreement (661 [PDF; Text]), by January 6 Oracle will identify and document (either with source code or other printed documentation or by identification of witnesses) those Oracle products, including licensed products, that embody the asserted claims. By January 20 Google will identify any other Oracle or licensed products that practice the asserted claims and/or challenge the products listed by Oracle as to their actual practice of the claims, along with support for Google's position. Finally, following Google's disclosure the parties will meet to try to agree to a list of stipulated practicing products and/or identify products on which they do not agree and why, and that information will be submitted to the court by January 27.

So progress on the patent marking front, but clearly no January trial date.

***********

Docket

661 - Filed and Effective: 12/30/2011
Statement
Statement re 641 Order Joint Statement Regarding Supplemental Order Regarding Patenting Marking by Google Inc., Oracle America, Inc.. (Peters, Marc)


************

Document

661

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

ORACLE AMERICA, INC.
Plaintiff,
v.
GOOGLE INC.
Defendant.

Case No. CV 10-03561 WHA

JOINT STATEMENT REGARDING
SUPPLEMENTAL ORDER
REGARDING PATENTING
MARKING

Dept.: Courtroom 8, 19th Floor
Judge: Honorable William H. Alsup

Pursuant to the Court’s December 6, 2011 Supplemental Order Regarding Patenting Marking (Dkt. No. 641), Google and Oracle met-and-conferred in person regarding a procedure and timetable regarding the marking issues, as directed by the Court. In so doing, the parties agreed to a procedure for identifying products that practice the asserted patents and for identifying any disputes, but could not agree to a timetable. (12/20/11 Joint Statement Regarding Supplemental Order Regarding Patenting Marking (Dkt. No. 643).) Following the December 21, 2011 Pre-Trial Conference, at which the Court advised the parties to further meet and confer regarding a timetable, the parties have reached an agreement, as follows:

1. On January 6, 2012, Oracle will provide an identification, for each of the 26 asserted claims, of each Oracle product, Oracle-licensed product, Sun product, or Sun-licensed product (“Oracle Products”) that practice or have practiced the claim. Oracle will also identify the fact witnesses who possess information supporting Oracle’s contentions that the Oracle Products practice or have practiced the asserted claims, as well as provide a summary of testimony Oracle intends to elicit at trial from those witnesses regarding those Oracle Products’ practice of the claims. Oracle will also provide source code citations and/or other documentation supporting Oracle’s contentions that the Oracle Products practice the asserted claims.

2. On January 20, 2012, Google will respond to Oracle and identify any other Oracle Products that Google contends practiced any of the 26 asserted claims during the alleged damages period and identify any products in Oracle’s identification that Google contends do not practice the identified claims. Google’s response will specify which Oracle Products it contends do (or do not) practice the asserted claims, and why.

3. Following Google’s response, the parties will meet-and-confer regarding their disclosures with the aim of preparing a stipulation of which Oracle Products practice the asserted claims. On January 27, 2012, the parties will jointly submit to the Court a list of the Oracle Products that they stipulate practice the asserted claims, which shall have the effect of establishing that fact for all purposes at trial, and a list of those Oracle Products for which there is a genuine dispute between the parties as to whether they practiced the asserted claims, along with brief explanations of the basis for each party’s contention.

1

Dated: December 30, 2011

MORRISON & FOERSTER LLP

By: /s/ Marc David Peters

MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
[email]
MARC DAVID PETERS (Bar No. 211725)
[email]
DANIEL P. MUINO (Bar No. 209624)
[email address telephone fax]

755 Page Mill Road BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[email address telephone fax]
STEVEN C. HOLTZMAN (Bar No. 144177)
[email address telephone fax]

ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
[email]
DEBORAH K. MILLER (Bar No. 95527)
[email]
MATTHEW M. SARBORARIA (Bar No. 211600)
[email address telephone fax]

Attorneys for Plaintiff
ORACLE AMERICA, INC.

2

Dated: December 30, 2011

KEKER & VAN NEST LLP

By: /s/ Matthias Kamber

SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[email address telephone fax]

DONALD F. ZIMMER, JR. (SBN 112279)

[email]
CHERYL A. SABNIS (SBN 224323)
[email]
KING & SPALDING LLP
[address telephone fax]

GREENBERG TRAURIG, LLP
IAN C. BALLON (SBN 141819)
[email]
HEATHER MEEKER (SBN 172148)
[email address telephone fax]

KEKER & VAN NEST LLP
ROBERT A. VAN NEST (SBN 84065)
[email]
CHRISTA M. ANDERSON (SBN184325)
[email]
DANIEL PURCELL (SBN 191424)
[email address telephone fax]

Attorneys for Defendant
GOOGLE INC.

3

ATTESTATION

I, Marc David Peters, am the ECF User whose ID and password are being used to file this JOINT STATEMENT REGARDING SUPPLEMENTAL ORDER REGARDING PATENTING MARKING. In compliance with General Order 45, X.B., I hereby attest that Matthias Kamber has concurred in this filing.

Date: December 30, 2011

/s/ Marc David Peters

4


  


Oracle v. Google - Patent Marking Facts - A Timetable | 98 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections
Authored by: Kilz on Tuesday, January 03 2012 @ 09:09 AM EST
Please mention the mistake in the title of the post.

[ Reply to This | # ]

Off Topic
Authored by: Kilz on Tuesday, January 03 2012 @ 09:09 AM EST
For all posts that are not on topic.

[ Reply to This | # ]

Newspicks
Authored by: Kilz on Tuesday, January 03 2012 @ 09:10 AM EST
Please mention the news story's name in the title of your
post.

[ Reply to This | # ]

Comes Stuff Here
Authored by: Kilz on Tuesday, January 03 2012 @ 09:15 AM EST
.

[ Reply to This | # ]

In brief
Authored by: jpvlsmv on Tuesday, January 03 2012 @ 10:59 AM EST
By this Friday, Oracle will list the products it thinks practice these patents
(with specificity- where in the code, and who will testify).

Then Google has 2 weeks to list other products it thinks practice the patents,
and to challenge items on the list Oracle produced.

Then they'll talk about it and might come up with a stipulated agreement by the
end of the month.

--Joe

[ Reply to This | # ]

Source code citations?
Authored by: Anonymous on Tuesday, January 03 2012 @ 12:36 PM EST
Oracle will also provide source code citations and/or other documentation supporting Oracle’s contentions...
Given that most of Oracle's products are closed source, how is Google reasonably expected to evaluate the source code citations? Will Google need (and will Oracle provide) the complete source code for all apps at issue? Is Google expected to take Oracle's word for this? Related, how will Google be expected to provide an alternative view if they challenge items do/do not practice the patents? Clearly they can't cite source code back at Oracle. I note that Oracle claimed in a previous filing that they demanded Google respond "with specificity," but it looks like the standard of specificity being set is impossible for Google to meet.

[ Reply to This | # ]

OpenJDK vs patents
Authored by: hAckz0r on Tuesday, January 03 2012 @ 11:29 PM EST
If a Java implementation necessarily requires the patents in question, then Sun's origional OpenJDK should certainly embody those patents. As such it should be "marked" or it is otherwise running afoul of Oracles current duty to mark.

I downloaded the Open Source distribution from http://download.java.net/openjdk/jdk7/ and took a peek via good old grep and what happened to pup up? how about this little tidbit from ./openjdk/langtools/LICENSE

Finally, any free program is threatened constantly by software patents. We wish to avoid the danger that redistributors of a free program will individually obtain patent licenses, in effect making the program proprietary. To prevent this, we have made it clear that any patent must be licensed for everyone's free use or not licensed at all.

My emphasis added

and from ./openjdk/langtools/THIRD_PARTY_README

Finally, software patents pose a constant threat to the existence of any free program. We wish to make sure that a company cannot effectively restrict the users of a free program by obtaining a restrictive license from a patent holder. Therefore, we insist that any patent license obtained for a version of the library must be consistent with the full freedom of use specified in this license.

then

11. If, as a consequence of a court judgment or allegation of patent infringement or for any other reason (not limited to patent issues), conditions are imposed on you (whether by court order, agreement or otherwise) that contradict the conditions of this License, they do not excuse you from the conditions of this License. If you cannot distribute so as to satisfy simultaneously your obligations under this License and any other pertinent obligations, then as a consequence you may not distribute the Library at all. For example, if a patent license would not permit royalty-free redistribution of the Library by all those who receive copies directly or indirectly through you, then the only way you could satisfy both it and this License would be to refrain entirely from distribution of the Library.

So, if Java(tm) has the patents in question implimented then it is clear that Sun had intentions that everybody is to be unencumbered, and if the patents are not in the OpenJDK then who is to say that Google must absolutely be implementing that patent if a non-infringing distribution is definitely possible?

Besides that, I found no patent numbers in the entire source tree, so it is unmarked by Sun/Oracle as far as I can see (IANAL). Java source comments from Taligent, IBM, AT&T, and Mitsubishi mention "protected by multiple patents", but no numbers, and they are not Sun/Oracle in any case. The only C language source deflate.c (aka part of the JVM proper) that mentions the word "patented" is talking about a prior version which subsequently had that patented algorithm removed.

---
DRM - As a "solution", it solves the wrong problem; As a "technology" its only 'logically' infeasible.

[ Reply to This | # ]

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